The USPTO issued a Report in October 2020 titled Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents, along with supplementary material that describes the methodology and scope of patent related data used in the Report. Following a first report also issued in October 2020 that pertains to AI and IP

On October 6, 2020, the U.S. Patent and Trademark Office (USPTO) published a report titled Public Views on Artificial Intelligence and Intellectual Property Policy. The report summarizes the nearly 200 comments received in response to patent-related questions regarding AI set forth in a request for comments (RFC) issued by the USPTO in August 2019 and non-patent IP questions set forth in an October 2019 RFC.

This post focuses on Part I of the report, which summarizes the comments received in response to the first RFC. Part II of the report pertains to the second RFC.


Continue Reading Covington Artificial Intelligence Update: USPTO Releases Report on Artificial Intelligence and Intellectual Property Policy

On August 27, 2019, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on Patenting Artificial Intelligence Inventions in the Federal Register. The Request follows Director Iancu’s statement that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in Artificial Intelligence (AI) and other emerging technologies, as explained in another post on an artificial intelligence conference held by the USPTO earlier this year.

Recent Rapid Advances in AI Technologies

The recent confluence of big data, increasingly faster and more specialized hardware, improved algorithms, and increased investment has led to rapid advancement in AI technologies and applications such as computer vision, natural language processing, medical diagnostics, robotics, autonomous vehicles, and drug development, among others. And while the Request does not define the term “artificial intelligence,” the USPTO does provide a class definition for the examination of AI inventions and patent applications, and Class 706 identifies several technologies encompassed by AI technology.


Continue Reading AI Update: USPTO Publishes Request for Comments on Patenting Artificial Intelligence Inventions

The U.S. Patent and Trademark Office (USPTO) held its Artificial Intelligence: Intellectual Property Policy Considerations conference on January 31, 2019. The conference featured six panels of speakers, including policy makers, academics, and practitioners from Canada, China, Europe, Japan, and the United States. As stated by USPTO Director Iancu during his introductory remarks, the purpose of the conference is to begin discussions about the implications that artificial intelligence (“AI”) may have on intellectual property law and policy. In this post, we provide an overview of Director Iancu’s Introductory Remarks and of three of the conference panels that addressed several current and forward-looking issues that will impact patent law and society at large.

Opening Remarks by Director Iancu

The Director noted that governments around the world are adopting long-term comprehensive strategies to promote and provide leadership for technological advances of the future, and that America’s national security and economic prosperity depend on the United States’ ability to maintain a leadership role in AI and other emerging technologies.

The USPTO is using AI technology to increase the efficiency of patent examination. For example, the USPTO has developed and is exploring a new cognitive assistant called Unity which is intended to allow patent examiners to search across patents, publications, non-patent literature, and images with a single click. The Director concluded by stating that one of his top priorities is ensuring that the U.S. continues its leadership when it comes to innovation, particularly in the emerging technologies such as AI and machine learning.
Continue Reading Artificial Intelligence and the Patent Landscape – Views from the USPTO AI Intellectual Property Policy Considerations Conference

On November 1, the European Patent Office’s (EPO) updated Guidelines for Examination went into effect. Of note, the Guidelines include a new subsection on “artificial intelligence and machine learning.” This is the latest milestone in a recent world-wide wave of interest in patenting in the field of artificial intelligence. However, the legal framework for patenting such inventions is uncertain, evolving, and not uniform across the globe. This post addresses the current state of artificial intelligence patenting in Europe and the United States in particular, and offers key takeaways that practitioners should consider when drafting and prosecuting patent applications in this field.

Background on Artificial Intelligence and Machine Learning

For context, artificial intelligence (“AI”) may be summarized as the simulation of intelligent human behavior by machines. A subcategory of AI, machine learning (“ML”), refers to ability of systems to learn from data and improve from experience automatically—in other words, without being explicitly programmed. In practice, the beneficial results delivered by AI and ML are rooted in algorithms and mathematical models. These features, however, have generally been excluded from patentability in both Europe and in the United States. While AI and ML hold promise as the next breakthrough technology, this legal precedent raises concerns about the ability to secure and maintain patents in this field.
Continue Reading AI Update: Considerations for Patenting Artificial Intelligence in Europe and the United States

On April 19, 2018, the U.S. Patent and Trademark Office released a Memorandum to the Patent Examining Corps regarding changes in examination procedure pertaining to subject matter eligibility in view of the Federal Circuit’s Berkheimer v. HP Inc. decision. Berkheimer held that when a claim is directed to an abstract idea, the question of whether a claim element or combination of elements is “well-understood, routine and conventional to a skilled artisan in the relevant field”—which bears on whether a claimed abstract idea can be transformed into a patent-eligible application—is a question of fact.
Continue Reading How You Can Utilize the USPTO’s Berkheimer Memorandum During Application Drafting, Prosecution and Appeal

On April 2, 2018, the U.S. Patent and Trademark Office released a memorandum to the Patent Examining Corps regarding recent subject matter eligibility decisions issued by the Federal Circuit. The memorandum discusses two recent decisions that found claims that improve computer technology are directed to patent-eligible subject matter rather than to an ineligible abstract idea. The memorandum and decisions are instructive for practitioners who draft patent applications, confront subject matter eligibility challenges or respond to USPTO rejections under 35 U.S.C. § 101.

In Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the Court (Dyk, Linn, Hughes) found no error in the district court’s subject matter eligibility determination and unanimously held that the claims were patent-eligible under § 101 because they improved computer technology by protecting users against previously unknown viruses and enabled more flexible virus filtering. The invention recited specific steps to accomplish the desired result, and was a non-abstract improvement over traditional computer functionality and virus scanning techniques which only recognized the presence of previously-identified viruses.

Relying on recent Federal Circuit precedent, the Court stated that in cases involving software inventions, the inquiry into whether the claims are directed to an abstract idea often turns on whether the claims focus on a specific asserted improvement in computer capabilities. The claims at issue in Finjan are directed to a method of providing computer security by scanning a downloadable program for suspicious code such as viruses, and attaching the results of the scan to the downloadable program in the form of a security profile. The Court adopted a district court claim construction in finding that the behavior-based virus scan approach improved computer functionality because it determines whether the program performs hostile or potentially hostile operations.


Continue Reading U.S. Patent and Trademark Office Releases Memorandum on Recent Subject Matter Eligibility Decisions